22678 Federal Register / Vol. 76, No. 78 / Friday, April 22, 2011 / Notices 

and the regulations governing the 

taking, importing, and exporting of 

endangered and threatened species 

(50 CFR parts 222–226). 

Dr. Diez was issued a 5-year permit to 

provide information on the ecology and 

population dynamics of hawksbill and 

green turtles inhabiting the waters 

surrounding Puerto Rico and the 

adjacent islands including Mona, 

Monito, Desecheo, Caja-de-Muertos, 

Vieques, the Culebra Archipelago, and 

the Tres Palmas reserve. In addition, 

researchers would monitor the 

prevalence of fibropapillomatosis, a 

debilitating disease know to occur in 

green turtle foraging aggregations in 

Puerto Rico. Researchers may capture by 

hand, entanglement or cast net, 

transport, photograph, measure, weigh, 

flipper tag, passive integrated 

transponder tag, blood and tissue 

sample, ultrasound, attach satellite 

transmitters to and release sea turtles. A 

subset of up to 10 green turtles per year 

from the Culebra study sites may 

undergo fibropapillomatosis tumor 

removal surgery and subsequent 

rehabilitation. 

Issuance of this permit, as required by 

the ESA, was based on a finding that 

such permit: (1) Was applied for in good 

faith, (2) will not operate to the 

disadvantage of such endangered or 

threatened species, and (3) is consistent 

with the purposes and policies set forth 

in section 2 of the ESA. 

Dated: April 18, 2011. 

P. Michael Payne, 

Chief, Permits, Conservation and Education 

Division, Office of Protected Resources, 

National Marine Fisheries Service. 

[FR Doc. 2011–9852 Filed 4–21–11; 8:45 am] 

BILLING CODE 3510–22–P 

DEPARTMENT OF COMMERCE 

United States Patent and Trademark 

Office 

[Docket No. PTO–C–2011–0011] 

Trademark Trial and Appeal Board 

Participation in Settlement 

Discussions 

AGENCY: United States Patent and 

Trademark Office, Commerce. 

ACTION: Notice of inquiry. 

SUMMARY: The United States Patent and 

Trademark Office (‘‘USPTO’’ or ‘‘Office’’) 

is seeking comments from stakeholders 

about the extent to which the 

Trademark Trial and Appeal Board 

(‘‘TTAB’’ or ‘‘Board’’) should become 

more directly involved in settlement 

discussions of parties to inter partes 

proceedings, including oppositions, 

cancellations and concurrent use cases. 

The purpose of this notice of inquiry is 

to determine whether the involvement 

of an Administrative Trademark Judge 

(ATJ) or Board Interlocutory Attorney 

(IA) would be desirable by parties, and 

if so, how extensively and at what 

points in proceedings. In addition, to 

the extent stakeholders voice a 

preference for assistance in settlement 

discussions but prefer such assistance to 

be provided by mediators or individuals 

other than Board judges and attorneys, 

it will be useful for the Board to receive 

suggestions on this option. 

COMMENT DEADLINE DATE: Written 

comments must be received on or before 

June 21, 2011. 

ADDRESSES: Written comments should 

be sent by electronic mail message over 

the Internet addressed to TTAB_

Settlement_comments@uspto.gov. 

Comments may also be submitted by 

mail addressed to: Mail Stop 

Comments—TTAB, P.O. Box 1451, 

Alexandria, VA, 22313–1451, marked to 

the attention of Karen Kuhlke. Although 

comments may be submitted by mail, 

the Office prefers to receive comments 

electronically. Comments may also be 

submitted through the Federal 

eRulemaking Portal Web site at http:// 

www.regulations.gov. Additional 

instructions on providing comments 

through the Federal eRulemaking Portal 

are available at http:// 

www.regulations.gov. All comments 

submitted directly to the Office or 

provided on the Federal eRulemaking 

Portal should include the docket 

number (PTO–C–2011–0011). 

The written comments will be 

available for public inspection at the 

Trademark Trial and Appeal Board, 

located in Madison West, Ninth Floor, 

600 Dulany Street, Alexandria, Virginia, 

and will be available via the Office’s 

Internet Web site (address: http:// 

www.uspto.gov). Because comments will 

be made available for public inspection, 

information that is not desired to be 

made public, such as an address or 

phone number, should not be included 

in the comments. 

FOR FURTHER INFORMATION CONTACT: 

Karen Kuhlke, Administrative 

Trademark Judge, Trademark Trial and 

Appeal Board, at (571) 272–4287. 

SUPPLEMENTARY INFORMATION: Over time, 

representatives of the Board have 

engaged in discussions with the 

Trademark Public Advisory Committee 

(TPAC) concerning the average overall 

length of Board trial proceedings. These 

discussions have generated a number of 

suggestions for process improvements, 

including suggestions related to 

fostering settlement discussions. The 

USPTO 2010–2015 Strategic Plan 

includes a commitment by the Office to 

assess the desirability among 

stakeholders, including trademark 

owners, intellectual property 

organizations, the trademark bar and 

others with an interest in defining Board 

procedures, for meaningful involvement 

of Board personnel in settlement 

discussions regarding inter partes 

proceedings (i.e., trial cases). In general, 

the Office seeks comments from 

stakeholders on all aspects of this issue, 

and is now opening the discussion to 

stakeholders and will consider all 

comments and suggestions that address 

this subject as well as any others which 

may be pertinent to the discussion. 

Below, specific questions are posed to 

generate discussion, but it is useful to 

first consider some background 

information. 

The Board estimates that two-thirds of 

all inter partes cases are disposed of 

without an answer being filed (e.g., 

because of withdrawal, default, or 

settlement). This may suggest that it 

would not be resource-effective to have 

a judge, attorney or mediator routinely 

involved in settlement discussions prior 

to close of the pleadings. On the other 

hand, perhaps the two-thirds figure 

would be higher, or cases that do settle 

without an answer ever being filed 

would be disposed of more quickly, if 

judges, attorneys or mediators were 

involved in settlement discussions early 

on. 

Most of the cases comprising the onethird that are not disposed of prior to an 

answer being filed still are disposed of 

without a full trial and do not require 

issuance of a final decision on the 

merits. While some of these are cases 

that a plaintiff fails to prosecute, or 

cases in which a defendant eventually 

abandons an application or surrenders a 

registration, i.e., cases disposed of as the 

result of unilateral action (or inaction), 

many are cases that are settled by 

agreement of the parties. In informal 

discussions with Board personnel, some 

have suggested that more parties would 

be willing to discuss settlement, even of 

seemingly intractable disputes, if the 

Board required them to discuss 

settlement. Based on anecdotal reports 

and observations, it would appear that 

there are many cases in which 

settlement talks are most useful after the 

exchange of initial disclosures or after 

the exchange of discovery requests and 

responses. Thus, related to the inquiry 

about whether Board personnel should 

be involved in settlement discussions of 

the parties is the inquiry about the 

particular point (or points) in the 

chronology of a proceeding when Board 

involvement in discussions should be 

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Federal Register / Vol. 76, No. 78 / Friday, April 22, 2011 / Notices 22679 

initiated or resumed to be most 

effective. 

In the Board’s Notice of Final Rule 

Making published August 1, 2007, at 72 

FR 42242, the Board introduced to its 

inter partes proceedings the 

requirement for a discovery conference, 

which includes a requirement for 

discussion of settlement or possible 

narrowing of claims and defenses. In 

that notice, and in response to concerns 

expressed by some who responded to 

the Notice of Proposed Rule Making, the 

Board stated that its involvement in 

settlement discussions would be rather 

limited. Subsequently, however, some 

stakeholders have suggested that the 

Board explore the possibility of more 

frequent Board-convened settlement 

conferences and consider the possibility 

of involving mediators on a routine 

basis. 

Under current Board practice, if a 

party requests Board involvement in a 

discovery conference, Board personnel 

will first inquire whether the parties 

have initiated settlement discussions. 

To date, parties have infrequently 

invited Board personnel to participate 

in these conferences. Moreover, when 

Board personnel participate in 

discovery conferences, Board 

involvement in settlement discussions 

is only in the broadest context. There is 

no routine Board involvement in 

settlement discussions in cases in which 

the Board is not invited into the 

discovery conference or, for cases in 

which the Board is so invited, after the 

completion of the discovery conference. 

Non-party involvement (through an 

ATJ, an IA, a USPTO mediator, or an 

outside mediator) in these settlement 

conferences could help the parties 

consider various means for resolution of 

the proceeding. For example, where 

parties are at an impasse because of 

difficulty resolving possible 

amendments to the identifications of 

goods or services, assistance could be 

provided to the parties in arriving at 

mutually agreeable amendments, and 

this is an area in which Board personnel 

could be particularly helpful. Or a 

mediator could be involved in 

discussions regarding possible 

restrictions on use of a mark, such as a 

requirement that it be used with a 

disclaimer or with a house mark. Also, 

in cases where pre-trial settlement is not 

possible, Board personnel or a mediator 

could be involved in discussions that 

would nonetheless narrow the issues for 

trial and encourage the parties to adopt 

an Accelerated Case Resolution 

procedure for their case. In other words, 

even if greater involvement by Board 

personnel or by mediators does not 

result in more frequent or faster 

settlements, an alternative result may be 

faster, more focused trials. 

Thus, the Office seeks responses to 

the following questions, as well as 

comments or suggestions on related 

topics (as these questions are illustrative 

of the discussion to be generated and 

not the exclusive issues to be 

discussed): 

(1) Should the Board be routinely 

involved in settlement discussions of 

parties, or instead, be involved only in 

particular cases on an ‘‘as needed’’ basis? 

(2) If you believe parties would 

benefit from involvement of a non-party, 

would it be preferable for settlement 

discussions to be handled by (a) an ATJ, 

(b) an IA, (c) a USPTO employee trained 

as a mediator but who is not an ATJ or 

IA, or (d) a third-party mediator? 

(3) How would the involvement be 

triggered? For example, by stipulation of 

the parties, by unilateral request or by 

some other trigger? Examples of 

situations that might be used as triggers 

for required settlement discussions 

involving a non-party could include the 

use by the parties of multiple 

suspensions for settlement discussions 

which proved unsuccessful, or events 

such as the filing of an answer, the 

exchange of disclosures, the completion 

of some discovery, or the close of the 

discovery period. 

(4) How many triggers should there be 

that would prompt Board or mediator 

involvement in settlement talks? For 

example, apart from the initial 

discovery conference, should there be a 

follow-up inquiry from the Board in the 

middle of discovery, at the end of 

discovery, or before pre-trial disclosures 

are made and commencement of trial is 

imminent? Should there be a required 

phone conference after the second or 

any subsequent request to extend or 

suspend discovery for settlement? 

(5) To what extent should Board 

personnel involved in settlement 

discussions be recused from working on 

the case? 

(6) Should motions for summary 

judgment, the vast majority of which are 

denied and do not result in judgment, 

be barred unless the parties have been 

involved in at least one detailed 

settlement conference? Should an 

exception to such a rule be made for 

motions based on jurisdictional issues 

or claim or issue preclusion? 

(7) Should the parties be accorded 

only limited discovery until they have 

had a detailed settlement discussion 

with a Board judge, attorney or 

mediator, with the need for subsequent 

discovery dependent on the results of 

the discussion? 

(8) Should the Board amend its rules 

to require that a motion for summary 

judgment be filed before a plaintiff’s 

pre-trial disclosures are due, and that 

the parties be required to engage in a 

settlement conference in conjunction 

with a discussion of plaintiff’s pre-trial 

disclosures? 

The potential benefits from 

facilitating more frequent and/or more 

detailed settlement discussions may 

include the following: (a) Increasing the 

number of settlements by having Board 

personnel or non-party mediators 

available to address parties’ needs in 

inter partes cases with varying claims 

and complexity; (b) gaining efficiency 

for the Board and users of the Board’s 

procedures by eliminating the cost and 

time of litigating through the full trial 

and briefing of all pleaded claims and 

defenses; and (c) increasing commercial 

stability by achieving faster and more 

cost-effective resolution to disputes, 

which provides for a more stable 

ownership platform. 

Authority 

Section 17 of the Trademark Act, 15 

U.S.C. Section 1067, provides that the 

Trademark Trial and Appeal Board shall 

determine and decide the respective 

rights of registration of parties to various 

inter partes proceedings. Proposed 

amendments to any rules governing 

these proceedings, which may result 

from this notice of inquiry, would be 

announced in a Notice of Proposed Rule 

Making and be subject to public 

comment. 

Notice of Inquiry: The Office is 

providing the public, including user 

groups, with an opportunity to comment 

on the procedures under consideration. 

The Office will consider the comments 

and decide whether to pursue 

suggestions for process improvements. If 

the Office decides to pursue 

implementation of suggestions, the 

Office will publish a notice to set forth 

the procedures and requirements. The 

Office appreciates any comments and 

feedback related to these subjects. 

Persons submitting written comments 

should note that the USPTO may not 

provide ‘‘comment and response’’ 

analysis, since notice and opportunity 

for public comment are not required for 

this notice under 5 U.S.C. 553(b) or any 

other law. The Board may further 

discuss this subject with stakeholders 

and user groups at a roundtable to be 

convened in the future. 

Dated: April 8, 2011. 

David J. Kappos, 

Under Secretary of Commerce for Intellectual 

Property and Director of the United States 

Patent and Trademark Office. 

[FR Doc. 2011–9801 Filed 4–21–11; 8:45 am] 

BILLING CODE 3510–16–P 

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